Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA893086
`
`Filing date:
`
`04/27/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91207333
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`RxD Media, LLC
`
`CECIL E KEY
`DIMUROGINSBERG PC
`1101 KING ST, STE 610
`ALEXANDRIA, VA 22314
`UNITED STATES
`Email: ckey@dimuro.com, ssakagami@dimuro.com
`
`Submission
`
`Appeal or Cross-Appeal of Final Board Decision
`
`Notice of Appeal
`to
`
`Name of U.S.
`District Court (if
`applicable)
`
`Case Number (if
`known)
`
`Civil Action in United States District Court
`
`Eastern District of Virginia
`
`1:18-cv-00486-LO-TCB
`
`Certificate of Ser-
`vice
`
`The undersigned hereby certifies that a copy of this paper has been served
`upon all parties, at their address of record by Email on this date.
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Cecil E. Key
`
`ckey@dimuro.com, dnees@dimuro.com, apapazian@dimuro.com
`
`/Cecil E. Key/
`
`04/27/2018
`
`Notice to TTAB Re Filing of Civil Action.pdf(106607 bytes )
`1 - Complaint.pdf(456164 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Plaintiff/Opposer,
`
`vs.
`
`RxD Media, LLC
`
`
`
`
`
`IP Application Development LLC
`
`
`
`
`91207333 (parent)
`91207598
`
`Opposition Nos.
`
`
`
`
`Application Nos.
`
`
`
`
`Mark: IPAD
`Filing Date: October 5, 2012
`
`77927446
`77913563
`
`
`
`Defendant/Applicant.
`
`
`OPPOSER’S NOTICE OF FILING A CIVIL ACTION
`
`
`
`On February 22, 2018, the Trademark Trial and Appeal Board dismissed Plaintiff/Opposer
`
`RxD Media, LLC’s (“RxD”) Notice of Opposition against IP Application Development LLC’s
`
`(“IP App”) Application Serial Nos. 77927446 and 77913563 (Consolidated Opposition Nos.
`
`9120733 and 91207598, TTABVUE 129).
`
`On April 26, 2018, RxD filed a civil action with the United States District Court for the
`
`Eastern District of Virginia appealing the Board’s decision under 15 U.S.C. § 1071(b)(1) and 37
`
`CFR § 2.145(c); and asserting (1) Defendant’s lack of bona fide intent to use the IPAD mark in
`
`commerce in connection with any services; (2) RxD’s use of the IPAD mark has priority over IP
`
`App because the IPAD mark is not distinctive of any services offered or objectively likely to be
`
`offered by IP App, and thus not protectable as a service mark; (3) likelihood of confusion; and (4)
`
`unfair competition under the Lanham Act. The action was assigned the following case caption:
`
`RxD Media, LLC v. IP Application Development LLC and Apple, Inc., Civil Action No. 1:18-cv-
`
`00486-LO-TCB (E.D. Va.). A copy of RxD’s Complaint is attached as Exhibit A.
`
`

`

`RxD hereby gives notice, pursuant to 37 CFR § 2.145(c)(3), that it has commenced a civil
`
`action for, among other claims, review of the Board’s February 22, 2018, decision.
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Cecil E. Key
`Cecil E. Key
`Virginia Bar No. 41018
`DIMUROGINSBERG P.C.
`1101 King Street, Suite 610
`Alexandria, Virginia 22314
`Phone: (703) 684-4333
`Fax: (703) 548-3181
`Email: ckey@dimuro.com;
`
`
`Dated: April 27, 2018
`
`
`
`
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on April 27, 2018, a true and correct copy of the foregoing was
`
`electronically mailed to the following:
`
`Dale Cendali
`Claudia Ray
`Johanna Schmitt
`Phill Hill
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, NY 10022
`Tel: (212) 446-4800
`Fax: (212) 446-6460
`Dale.cendali@kirkland.com
`Claudia.ray@kirkland.com
`Johanna.schmitt@kirkland.com
`Phil.hill@kirkland.com
`
`Attorneys for IP Application Development LLC
`
`
`
`/s/ Cecil E. Key
`Cecil E. Key
`
`
`
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 1 of 23 PageID# 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`
`
`RXD MEDIA, LLC,
`196 W. Ashland Avenue
`Doylestown, PA 19808
`
`
` Plaintiff/Appellant,
`
`
`v.
`
`IP APPLICATION DEVELOPMENT LLC
`Serve: Registered Agent
`Corporation Service Company
`251 Little Falls Dr.
`Wilmington, DE 19808
`
`And
`
`APPLE, INC.
`Serve: Registered Agent
`CT Corporation System
`4701 Cox Rd., Suite 285
`Glen Allen, VA 23060
`
` Defendants.
`
`
`
`
`
`Civil Action No.
`_______________
`
`JURY TRIAL DEMANDED
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`
`
`COMPLAINT
`
`Plaintiff/Appellant, RXD Media, LLC (“RXD”), by and through the undersigned
`
`counsel, for its complaint against IP Application Development LLC (“IP App”) and Apple,
`
`Inc. (“Apple”) (collectively “Apple/IP App”) hereby alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is a civil action for (1) review of the decision of the Trademark Trial
`
`and Appeal Board of the U.S. Patent and Trademark Office (“TTAB”) under 15 U.S.C. §
`
`1071(b)(1) and 37 CFR §2.145(c); (2) declaratory judgment that Apple/IP App’s intent-to-
`
`use applications are invalid because Apple/IP App lacks an objectively verifiable bona fide
`
`1
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 2 of 23 PageID# 2
`
`intent to use the IPAD in commerce for services; (3) declaratory judgment that RxD has
`
`priority over Apple/IP App in the IPAD mark because the IPAD mark is not distinctive of
`
`any services offered or objectively likely to be offered by Apple, and thus not protectable
`
`as a service mark; (4) declaratory judgment that confusion is likely to result as to the
`
`source of RXD’s services if Apple/IP App begin using the IPAD mark for services; (5)
`
`unfair competition as a result of Apple/IP App’s attempts to obtain rights in gross to the
`
`IPAD service mark with prior knowledge of RXD’s prior use and to the detriment of RXD.
`
`2.
`
`This action arises out of and relates to the efforts of Apple/IP App to obtain
`
`exclusive rights to the IPAD service mark for a broad series of services, including those
`
`that RXD has been continuously offering under the IPAD mark since 2007. At the
`
`direction and under the control of Apple, IP App filed Application Serial Nos. 77/927446
`
`(the “’466 Application”) and 77/913563 (the “’563 Application”) (collectively “the
`
`Applications”) under 15 U.S.C. § 1051(b) (intent-to-use) for the mark IPAD for various
`
`computerized and online services. RXD began using the mark IPAD for its services at least
`
`as early as September 1, 2007, filed an application to register its mark based on that use,
`
`and opposed Apple/IP App’s Applications.
`
`3.
`
`Given RXD’s priority of use, and the identical nature of the marks as
`
`applied to the same types of services, consumers are likely to confuse the marks and the
`
`sources of the services that the marks represent. For this reason, IP App’s applications for
`
`the IPAD service conflict with RXD’s rights under 15 U.S.C. § 1052(d), but the TTAB
`
`denied RXD’s Opposition.
`
`4.
`
`RXD seeks reversal of the TTAB decision in RxD Media, LLC v. IP
`
`Application Development LLC, Opposition Nos. 91207333, 91207598, 2018 WL 1027859
`
`(TTAB Feb. 22, 2018) dismissing RXD’s opposition of Apple/IP App’s application for the
`
`2
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 3 of 23 PageID# 3
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`service mark IPAD (the “TTAB Decision”), as well as a declaration of its rights, and
`
`equitable and monetary relief as a result of Apple/IP App’s willful and wanton disregard of
`
`RXD’s rights in its IPAD mark for computerized and online services.
`
`THE PARTIES
`
`5.
`
`Plaintiff/Appellant RXD is a Pennsylvania limited liability company with its
`
`principal place of business at 196 W. Ashland Street, Doylestown, Pennsylvania 18901.
`
`6.
`
`Defendant IP App is a Delaware limited liability company with a business
`
`address at 2711 Centerville Road, Suite 400, Wilmington, Delaware 19808.
`
`7.
`
`Defendant Apple, Inc. (“Apple”) is a California corporation with its
`
`principal place of business at 1 Apple Park Way, Cupertino, California 95014.
`
`8.
`
`Apple is the parent company of IP App. Apple directed all decisions and
`
`activities relating to the Applications. In addition, all use of the IPAD mark for any
`
`services, including those described in the Applications, will be by Apple which will control
`
`and direct all decisions related to the use. IP App will not independently use or make
`
`decisions regarding the use of the IPAD service mark. Accordingly, Apple is a real party
`
`in interest of this action.
`
`JURISDICTION
`
`9.
`
`This Court has jurisdiction over the subject matter of this action pursuant to
`
`5 U.S.C. § 701, et seq.; 15 U.S.C. §§ 1121 and 1071(b)(1); and 28 U.S.C. § 1331, 1338(a)
`
`and (b), and under 28 U.S.C. § 2201 because RXD seeks a declaration of rights regarding
`
`an actual case and controversy between the parties.
`
`10.
`
`Because Defendants reside in a plurality of districts not embraced by the
`
`same state, this court has personal jurisdiction over Defendants under 15 U.S.C. §
`
`1071(b)(4).
`
`3
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 4 of 23 PageID# 4
`
`11.
`
`Venue is appropriate in this District pursuant to 28 U.S.C. 1391(b)(3),
`
`because Defendants do not reside in the same state and are subject to the personal
`
`jurisdiction of this Court under 15 U.S.C. § 1071(b)(4).
`
`FACTS COMMON TO ALL COUNTS
`
`A. RXD’s Adoption and Attempts to Register its IPAD Service Mark
`
`12.
`
`RXD has priority with respect to the IPAD service mark at issue. RXD has
`
`been using its IPAD mark in interstate commerce since at least as early as September 1,
`
`2007, several years prior to the filing of Apple/IP App’s Applications or Apple’s adoption
`
`of iPad for its tablet computer device. RXD has continuously used the IPAD mark since
`
`that date in connection with its web-based software application for mobile-access database
`
`management services whereby users can store and access their personal information
`
`(“RXD’s services”).
`
`13.
`
`RXD is the owner of U.S. Service Mark Application No. 77/958,000 (the
`
`“’000 Application”) for the IPAD mark for use in connection with “providing temporary
`
`use of a web-based software application for mobile-access database management whereby
`
`users can store and access their personal information” in Class 42. IP App’s ‘000
`
`Application was filed on March 12, 2010. A true and correct copy of the U. S. Patent and
`
`Trademark Office’s (“USPTO”) TESS Records identifying RXD’s ‘000 Application is
`
`attached hereto as Exhibit A.
`
`14.
`
`RXD also has other pending applications that incorporate its IPAD mark for
`
`use in connection with services that are the same or related to those for which RXD has
`
`been using its IPAD mark since 2007. These pending applications are U.S. Application
`
`No. 87/257,586 to register the mark IPAD TODAY for “providing temporary use of on-
`
`4
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 5 of 23 PageID# 5
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`line non-downloadable software for storage and retrieval of personal and household
`
`information” in Class 42, and U.S. Application No. 87/257,583 to register the mark IPAD
`
`EDUCATION for “providing temporary use of on-line non-downloadable software for
`
`storage and retrieval of personal information related to education or classroom activity” in
`
`Class 42.
`
`15.
`
`Each of RXD’s applications has been suspended by the USPTO pending a
`
`final determination regarding Apple/IP App’s Applications.
`
`B. Apple/IP App’s Attempts to Obtain Exclusive Rights in the IPAD
`Service Mark
`
`16. Without RXD’s authorization or approval, but with knowledge of RXD’s
`
`prior use of the IPAD mark, IP App, at the direction and under the control of Apple,
`
`applied to register the IPAD mark itself with the alleged intent to use the mark in
`
`commerce in the United States in connection with various computerized and online
`
`services.
`
`17.
`
`Apple did not decide to adopt the IPAD mark for any purpose until 2009,
`
`and did not use the mark for any purposes until 2010. Apple was not the first to use the
`
`IPAD mark, including for handheld computer devices. Apple knew that it did not have
`
`exclusive rights or priority of use of the IPAD mark at the time that it announced the
`
`launch of its iPad tablet computer in January 2010. Ultimately, Apple was forced to
`
`purchase rights from prior users of IPAD to assure that Apple had exclusive rights in the
`
`IPAD mark for tablet computers.
`
`18.
`
`Until 2009, IP App did not exist. It was formed for the express purpose of
`
`filing trademark and service mark applications claiming the use of IPAD for a wide range
`
`5
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 6 of 23 PageID# 6
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`of goods and services. The goal was to shield Apple’s identity as the ultimate user of the
`
`mark and real party in interest.
`
`19.
`
`At Apple’s direction, IP App then filed clandestine applications claiming a
`
`broad range of services in Canada and Trinidad & Tobago. Apple/IP used these
`
`clandestine applications to claim priority for the ‘446 and ‘563 Applications when those
`
`were filed in the U.S. True and correct copies of the U. S. Patent and Trademark Office’s
`
`(“USPTO”) TESS Records identifying IP App’s ‘446 and ‘563 Applications are attached
`
`hereto as Exhibit B and C respectively.
`
`20.
`
`Apple then announced the launch of its iPad tablet computer in January
`
`2010 in a widely-publicized rollout featuring Apple’s CEO, Steve Jobs. Apple’s
`
`announcement and ultimate sales of the iPad device overwhelmed and overshadowed the
`
`business opportunities of smaller players, including RXD, who had established use of
`
`IPAD for goods and services.
`
`21.
`
`The ‘446 Application was amended during prosecution. Apple/IP App now
`
`seeks to register the mark IPAD for the following services currently described in the ‘446
`
`Application:
`
`“Business management; business administration; business consulting
`services; providing office functions; advertising and marketing services;
`sales promotion services; advertising and marketing services, namely,
`promoting the goods and services of others; conducting market research;
`analysis of advertising response and market research; dissemination of
`advertisements and advertising material; consumer loyalty services for
`promotion of digital electronic devices and software; arranging and
`conducting incentive rewards programs to promote the sale of digital
`electronic devices; computerized database and file management; data
`processing services; providing business and commercial information over
`computer networks and global communication networks; business services,
`namely, providing computer databases regarding the purchase and sale of a
`wide variety of products and services of others; business services, namely,
`dissemination of advertising for others via computer networks and global
`communication networks; compilations of business directories
`for
`
`6
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 7 of 23 PageID# 7
`
`Internet and other electronic, computer and
`the
`publishing on
`communications networks; retail store services in the field of books,
`magazines, periodicals, newsletters, journals and other publications on a
`wide range of topics of general interest; retail store services in the field of
`downloadable entertainment programs
`featuring movies,
`television
`programs, sporting events, musical works, and audio and audiovisual works;
`retail store services in the field of computer, electronic and entertainment
`products, telecommunications apparatus, mobile phones, handheld mobile
`digital electronic devices, and other consumer electronics, computer
`software, and accessories, peripherals, and carrying cases for such products;
`retail store services in the field of books, magazines, periodicals,
`newsletters, journals and other publications on a wide range of topics of
`general interest, provided via the Internet and other computer, electronic and
`communications networks; retail store services in the field of entertainment
`featuring movies, television programs, sporting events, musical works, and
`audio and audiovisual works, via the Internet and other computer, electronic
`and communications networks; retail store services featuring computer,
`electronic and entertainment products, telecommunications apparatus,
`mobile phones, handheld mobile digital electronic devices, and other
`consumer electronics, computer software, and accessories, peripherals, and
`carrying cases for such products, via the Internet and other computer,
`electronic and communications networks; product demonstrations provided
`in-store and via global communications networks and other electronic and
`communications networks; subscription services, namely, providing
`subscriptions to text, data, image, audio, video, and multimedia content,
`provided via the Internet and other electronic and communications
`networks; online retail store services featuring downloadable pre-recorded
`text, data, image, audio, video, and multimedia content for a fee or pre-paid
`subscription, provided via
`the
`Internet and other electronic and
`communications networks; arranging and conducting of commercial, trade
`and business conferences, shows, and exhibitions for commercial purposes;
`information, advisory and consultancy services relating to all the aforesaid
`business services” in Class 35;
`
`“Storage of electronic media, namely, images, text, video, and audio data”
`in Class 39; and
`
`“Computer services, namely, creating indexes of information, sites and
`other resources available on computer networks; Searching and retrieving
`information, sites, and other resources available on computer networks for
`others; Recording data for others on optical, digital and magnetic media for
`electronic storage; Computer service, namely, acting as an application
`service provider in the field of knowledge management to host computer
`application software for the collection, editing, organizing, modifying, book
`marking, transmission, storage and sharing of data and information
`according to user preferences; providing an online searchable database of
`text, data,
`image, audio, video, and multimedia content featuring
`
`7
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 8 of 23 PageID# 8
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`information in the fields of computer hardware and software development,
`technology development, and consumer electronics” in Class 42.
`
`22.
`
`The ‘563 Application was also amended during prosecution. Apple/IP App
`
`now seek to register mark IPAD for the following services currently described in the ‘563
`
`Application:
`
`“Telecommunication access services; communications by computer
`terminals; communication services between computers, namely, electronic
`transmission of data and documents among users of computers; electronic
`sending of data and documentation via the Internet or other databases;
`electronic transmission of news and data; providing telecommunication
`access to websites and electronic news services online allowing the
`download of information and data; providing telecommunication access to
`web sites on the Internet; delivery of digital music by telecommunications;
`providing wireless telecommunications, namely, transmission of voice,
`audio, visual images, and data, via electronic communications networks;
`wireless digital messaging, paging services, and electronic mail services,
`including services that enable a user to send and/or receive messages
`through a wireless data network; one-way and two-way paging services;
`teletext, telegram transmission, and telephone services; broadcasting or
`transmission of
`radio
`and
`television programs; provision of
`telecommunications access and the Internet electronic transmission of
`streamed and downloadable audio and video files for others via computer
`and other communications networks; webcasting services (transmission);
`delivery of messages by electronic
`transmission; provision of
`telecommunication connectivity services and access
`to electronic
`communications networks, for transmission or reception of audio, video or
`multimedia content; provision of telecommunications connections to
`electronic communication networks, for transmission or reception of audio,
`video or multimedia content; providing telecommunication access to digital
`music web sites on the Internet; providing telecommunication access to
`MP3 web sites on
`the
`Internet; delivery of digital music by
`telecommunications, namely, by electronic transmission; provision of
`telecommunications connections to the Internet or computer databases.
`electronic mail services; telecommunication of information, namely,
`computer aided
`transmission of
`information and
`images,
`including
`webpages; video broadcasting, broadcasting pre-recorded videos featuring
`music and entertainment, television programs, motion pictures, news,
`sports, games, cultural events, and entertainment-related programs of all
`kinds, via a global computer network; streaming of video content via a
`global computer network; subscription audio broadcasting via a global
`computer network; audio broadcasting; audio broadcasting of spoken word,
`music, concerts, and radio programs, broadcasting pre-recorded videos
`featuring music and entertainment, television programs, motion pictures,
`
`8
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 9 of 23 PageID# 9
`
`news, sports, games, cultural events, and entertainment-related programs of
`all kinds, via computer and other communications networks; streaming of
`audio content via a global computer network; electronic transmission of
`audio and video files via communications networks; peer-to-peer network
`computer services, namely, electronic transmission of music, video, and
`audio recordings among computers via communication networks; providing
`on-line bulletin boards for the transmission of messages among computer
`users concerning entertainment, music, concerts, videos, radio, television,
`film, news, sports, games and cultural events; rental of telecommunication
`apparatus; providing email services; news agency services for electronic
`transmission;
`telecommunications
`consultation;
`facsimile, message
`collection and
`transmission services;
`transmission of data and of
`information by electronic means, namely, by computer, cable, radio,
`teleprinter, teleletter, electronic mail, telecopier, television, microwave,
`laser beam, communications satellite or electronic communication means;
`electronic transmission of data, namely, transmission of data by digital
`audiovisual apparatus controlled by electronic data processing apparatus or
`computers; information, advisory and consultancy services relating to all the
`aforesaid. provision of telecommunication access to web-sites featuring
`multimedia materials; providing telecommunication access to databases and
`directories via communications networks for obtaining data in the fields of
`music, video, film, books, television, games and sports; providing users
`with telecommunication access time to electronic communications networks
`with means of identifying, locating, grouping, distributing, and managing
`data and links to third-party computer servers, computer processors and
`computer users; Internet access provider services” in Class 38; and
`
`“Providing web-sites, via a global computer network, to enable users to
`program the scheduling of audio, video, text and other multimedia content,
`including music, concerts, videos, radio, television, news, sports, games,
`cultural events, and entertainment-related programs as they will be aired;
`design and development of computer hardware and software; computer
`hardware and software consulting services; rental of computer hardware and
`software apparatus and equipment; multimedia software and audio-visual
`software consulting services; computer programming; support and
`consultation services for developing computer systems, databases and
`software applications; graphic design for the compilation of web pages on
`the Internet; providing a website that features information on computer
`technology and programming; creating and maintaining websites; hosting
`the web-sites of others; providing search engines for obtaining data via
`communications networks; application service provider (ASP) services
`featuring software for use in connection with online music subscription
`service, software that enables users to play and program music and
`entertainment-related audio, video, text and multimedia content, and
`software featuring musical sound recordings, entertainment-related audio,
`video, text and multimedia content; providing temporary use of on-line non-
`downloadable software to enable users to program audio, video, text and
`
`9
`
`
`

`

`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 10 of 23 PageID# 10
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`including music, concerts, videos, radio,
`other multimedia content,
`television, news, sports, games, cultural events, and entertainment-related
`programs; providing search engines for obtaining data on a global computer
`network; information, advisory and consultancy services relating to all the
`aforesaid; provision of Internet search engines; creating indexes of online
`information, sites and other resources available on global computer
`networks for others; providing websites, via a global computer network,
`featuring technology that enables users to program the scheduling of audio,
`video, text, and other multimedia content, including music, concerts, videos,
`radio, television, news, sports, games, cultural events, and entertainment-
`related programs as they will be aired” in Class 42.
`
`23.
`
`Following examination, both of the Applications were rejected by the
`
`USPTO based on a finding that the IPAD mark was merely descriptive of Apple/IP App’s
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`described services. In each application, after receiving a final rejection, IP App, acting at
`
`Apple’s direction and control, filed a Request for Reconsideration in which it asserted that
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`the IPAD service mark has acquired secondary meaning through the wide-spread
`
`recognition of Apple’s iPad device and Apple’s adoption and use of other “I”-prefix marks
`
`for other products and services such as iPhones, iPods, iTunes and iCloud.
`
`24.
`
`IP App did not make any showing of use of the IPAD mark by Apple in the
`
`rendering of services. Rather, the evidence it submitted by IP App demonstrated that IPAD
`
`had recognition as a mark solely for a tablet computer device, but other Apple “marks,
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`including other “I”-prefix marks, were associated with the same services described in the
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`Applications and already offered by Apple, such as the ITUNES music service.
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`C. The TTAB Proceedings
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`25.
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`RXD filed Opposition Nos. 91207333 and 91207598 against Apple/IP
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`App’s Applications for the IPAD service mark. The bases for RXD’s Oppositions were
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`that RXD had established priority based on its use since at least as early as September 1,
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`2007 and that confusion as to source, sponsorship or affiliation would likely result were
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`Apple/IP App be granted nationwide priority to use the IPAD service mark in commerce.
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`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 11 of 23 PageID# 11
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`26.
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`During the TTAB Proceedings, IP App was ordered to produce documents
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`relating to the distinctiveness of Apple/IP App’s IPAD mark because “the question of
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`distinctiveness is relevant as the [Apple/IP App] marks in the involved applications were
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`approved for publication pursuant to a claim of acquired distinctiveness under Section
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`2(f).” ‘333 Opp., TTABVUE 47 at 7.
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`27.
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`On March 7, 2016, IP App filed a motion for summary judgment in the
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`Oppositions.
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`28.
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`On April 6, 2016, RXD filed a motion to amend its notice of opposition to
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`include further express claims that Apple/IP App lacked a bona fide intent to use the IPAD
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`mark, that Apple/IP App’s IPAD mark lacked distinctiveness and did not and could not
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`acquire distinctiveness prior to RXD, and a claim for unfair competition based on the
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`Apple/IP App’s attempts to unfairly and improperly obtain presumptive nationwide rights
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`in which it was a junior user and had never show a bona fide intent to use. RXD’s
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`requested amendments were based on evidence developed in discovery, including the
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`factual information that IP App had been ordered to produce, which showed that Apple/IP
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`App was intentionally attempting to obtain rights in gross to the detriment of and harm to
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`RXD, an established user of the IPAD mark.
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`29.
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`On September 14, 2016, the TTAB rejected RXD’s motion to amend. The
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`TTAB cited prejudice to Apple/IP App from “discovery Opposer [RXD] could have
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`conducted long ago,” ‘333 Opp., TTABVUE 66 at 8, even though RXD’s amendments
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`were based solely on discovery already taken as of the close of discovery with no request
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`to reopen discovery.
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`30.
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`Also on September 14, 2016, the TTAB denied IP App’s motion for
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`summary judgment. In denying the summary judgment, the TTAB expressly stated that
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`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 12 of 23 PageID# 12
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`“[b]ecause Applicant [IP App] seeks registration of its mark under Section 2(f), that mark’s
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`lack of inherent distinctiveness is an established fact. … Accordingly, if Opposer’s
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`[RXD’s] pleaded mark IPAD is determined to be merely descriptive with respect to its
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`identified services, and therefore also not inherently distinctive, the issue of priority would
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`be determined on the basis of the priority of the acquisition of acquired distinctiveness.”
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`‘333 Opp. TTABVUE 66 at 12 n.6.
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`31.
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`32.
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`The consolidated oppositions then moved forward to trial.
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`On February 22, 2018, an entirely different panel at the TTAB issued a final
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`decision erroneously dismissing RXD’s oppositions against IP App’s IPAD mark. In the
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`final decision, the second panel acknowledged that both parties had submitted substantial
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`amounts of evidence regarding the failure of Apple/IP App’s marks to acquire secondary
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`meaning or to establish priority in the acquisition of acquired distinctiveness, which
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`evidence was consistent with the prior panel’s ruling in denying Apple/IP App’s motion for
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`summary judgment. The second panel refused to consider the evidence, however, and
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`focused solely on Apple/IP App’s constructive filing dates, including filings in foreign
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`countries that were intended to shield Apple’s involvement and plans.
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`33.
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`At the time of the trial, RXD had continuously used its IPAD service mark
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`for over 10 years. Apple/IP App, by contrast, had never offered an IPAD branded service,
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`and, upon information and belief, Apple/IP App still have offered no IPAD branded
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`services.
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`34.
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`The TTAB nevertheless denied RXD’s Oppositions based solely on the
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`conclusion that RXD could not establish secondary meaning in its mark as of January 25,
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`2010, the date of Apple/IP App’s filing of their applications in the U.S.
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`Case 1:18-cv-00486-LO-TCB Document 1 Filed 04/26/18 Page 13 of 23 PageID# 13
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`COUNT I:
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`REQUEST FOR JUDICIAL REVIEW OF THE TTAB DECISION
`UNDER §§ 1071(b) AND 1052(d)
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`35.
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`RXD repeats and realleges the allegations of Paragraphs 1-34 as if fully set
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`forth herein.
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`36.
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`The TTAB issued a final decision in RxD Media, LLC v. IP Application
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`Development LLC, Opposition Nos. 91207333, 91207598 (TTAB Feb. 22, 2018)
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`dismissing RXD’s opposition of Apple/IP App’s applications to register the service mark
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`IPAD (the “TTAB Decision”) based on the conclusion that RXD’s use of the IPAD mark is
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`descriptive and RXD’s IPAD mark had not acquired secondary meaning as of the date of
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`Apple/IP App’s filing of their U.S. service mark applications. In reaching this conclusion,
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`the TTAB failed to consider a large amount of evidence that a prior TTAB panel had
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`previously found to be relevant in the course of denying Apple/IP App’s motion for
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`summary judgment.
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`37.
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`In the TTAB Decision, the TTAB also noted that “the only claim brought by
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`[RxD] is likelihood of confusion; there is no claim that IP App’s marks are merely
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`descriptive and have not acquired distinctiveness.” RxD Media, 2018 WL 1027859 at *3.
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`RXD had, however, attempted to amend its Oppositions to expressly include these claims
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`in conformance with the evidence but was erroneously denied the opportunity by the
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`TTAB. Moreover, both parties presented evidence during trial on the issue of the acquired
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`distinctiveness of Apple/IP App’s mark.
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`38.
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`39.
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`RXD respectfully requests a de novo judicial review of the TTAB Decision.
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`The TTAB Decisi